AMERICAN VALVE & METER CO. et al. v. FAIRBANKS, MORSE & CO. et al., 249 F. 234

BAKER, Circuit Judge (after stating the facts as above). In single main track days tenders were supplied with water from tanks at the side of the right of way. A pipe projected horizontally from the tank near the bottom. Over the pipe was hinged a spout which normally stood upright. This spout could be pulled down and a valve operated to discharge water into the hole of a properly placed tender.

When double main tracks became common, inconvenience and delay resulted from taking water from the tank at one side of the tracks; and soon came the “railway water column.” In this a water main led to' a standpipe or column which was erected between the tracks; from the top of the column, at right angles, extended a rigid discharge spout which normally was parallel to the tracks; and the column could be rotated to swing the spout over either track.

Locomotives were being built larger and larger; on the same railway, tenders of various heights were in contemporaneous use; and for some years before Johnson devised his water column the variation amounted to five or six feet. One condition of meeting perfectly the known situation was that the outer end of the spout should be movable up and down in a substantially vertical line above the water holes of tenders of varying heights.

Other concurrent conditions were that the spout in its most elevated position should drain, when the valve in the column was shut off, into the water hole of the tender, so as to avoid in winter the formation of ice heaps about the column between the tracks; and that the working relation between the column’s nozzle and the discharge spout should be such that during the coldest weather the device would not be put out of commission by freezing. Efforts, prior to Johnson’s were along the following lines: One type had a ball and socket joint between the column nozzle and the spout.

By providing a continuous waterway, the spout, inasmuch as its outer end in its normal position was above the head of the column, would drain bade into the column. Thus the danger of ice heaps was avoided. But manifestly the outer end of the spout could move only in the arc of the circle of which the spout was the radius; and the overlapping parts of the ball and socket joint would become fast from freezing in very cold weather, putting the apparatus temporarily out of service, or causing it to be broken by forcible attempts at operation.

In another form of the continuous waterway species the connection between the column nozzle and the spout was a flexible rubber tube, whose extensible accordion plaits permitted the outer end of the spout to be placed over the holes in tenders of varying height. Though this form prevented ice heaps about the base, the pockets in the plaits detained considerable water which when frozen rendered the device inoperable or caused the tube to be ruptured by impatient hands.

In the Poage structure, pictured in the statement, we find that fewer of the difficulties were overcome than in the kinds in which there was a fixed and completely watertight connection between the column nozzle and the spout. Poage’s is a modified form of the continuous waterway type. Eor, though Poage’s specification speaks of a “loose” connection between the male and female members, the “annular space G” is slight in radial distance and limited in circumferential movement.

It seems clear to us that “loosely” was used in the sense that the members were not affixed to each other and not completely watertight as in the ball and socket and accordion plait connections, and not in the sense in which a straight-sided funnel may be held “loosely” about the curved discharge end of a faucet.

In operation, the annular space frequently became fast with ice; back pressure caused water to overflow through the annular space ■ and form ice heaps about the base; the stop at bar H (Figure 5) prevented the outer end of the spout from being raised to1 the level of the hinge F, which forms the center of the arc described by the"outer-end of the spout; and all movement of the outer end of the spout was. down and away from the vertical plane in the center of the track. In Poage’s modified form C, the male and' female members were somewhat longer, but the principle of operation remained unchanged.

These prior art structures, in our judgment, emphasized the difficulties rather than indicated the solution. In Johnson’s structure the co-operation of two new features is essential. One is the connection between the. column nozzle and the spout. He made his nozzle in the form of an extended gooseneck, with a relatively flat downward curve. Over this he placed a spout whose'rear portion, straight-lined, was of such diameter as to permit movement of the spout not directed or controlled by the gooseneck nozzle.

In this connective feature Johnson rejected ball and socket joints and accordion plaits, and likewise departed radically from the concentric and arc-ed movement of Poag'e’s male and female members.

The other feature is the extended arm, pivoted at one end to the column at a point approximately opposite the middle point of the range of movement of the end of the spout, and rigidly affixed at the other end to the sides of the spout. (In the prior art .structures, from the earliest watertank to the latest water column, the spout itself was virtually the radius of the arc described by the end of the spout.) The first feature provides the capacity, and this second feature furnishes the means, of swinging the end of the spout in a substantially vertical line above the holes of tenders of varying height.

This combination, resulting in a structure that substantially met all the difficulties, was novel. Each element, as such, was to be found somewhere or other in the mechanical world. And of course, in the light of the patent, other water columns may be, and for use in this case have been, altered and reconstructed to resemble the Johnson; but even with the aid of hindsight we fail to see in the patent anything other than a meritorious invention. A large part of the record and briefs is taken up with matters which we have carefully examined, hut which, we think, need no more than passing mention.

Appellees’ insistence that the “vertical plane” of the claims is one that extends through the column and spout, and not the one that is drawn in the center of the track, results from a misreading of the patent. Prolonged discussion of numerous photographs and measurements by opposing witnesses is presented concerning the character and dimensions of a water column erected by Johnson at Hayfield, Minn., about a year before he applied for his patent. Appellees’ contention is that the Hayfield structure has a limit of accommodation of only a few inches, and not the “six feet or more” specified in the patent.

Whether the Hayfield structure was a reduction to practice or an experimental use; whether its range of accommodation was less than that subsequently stated in the application for the patent; whether other water columns, also erected by Johnson prior to his application, as at Oelwein, Iowa, were perfect exemplifications of tlie patent; and what may be the truth respecting the methods of taking photographs and measurements —are questions we deem irrelevant. For this suit is based, not on Johnson’s practices, but on his patent.

It is also claimed that the patent drawings, if scaled, do not exactly accord with the written description and the claims. But drawings are to be taken as illustrative of the idea of the patent, not as working plans. Western Telephone Co. v. American Electric Telephone Co., 131 Fed. 77, 65 C. C. A. 313. Regarding Foster’s patent, appellees present the question of invention as though it would be obvious to a mechanic to change the rigidly attached ends of the Johnson arms into pivoted ends. Of course a mechanic could do that; but, if he did, the obvious result would he the inoperativeness of the Johnson structure.

Johnson must have seen that obvious result, and therefore used the more expensive rigid attachment; but neither to Johnson nor to others skilled in the art was it then obvious that all the aims and results of Johnson could be attained in a better way by pivoting the outer ends of the supporting arms. For that better way is impossible unless, as shown by Foster, the arms be pivoted near the inner end of the spout and between that point and the outer end of the spout additional supporting means be provided.

After the desirability of the improvement and the means of accomplishing it were first perceived in the creative imagination, it was doubtlessly easy enough for Foster or any mechanic to go to- the general art of pulleys, chains, counterweights, and arms or levers pivoted at both ends in various places, and gather the elements of the new combination. Though Foster’s improvement is slight compared to Johnson’s, we cannot find that the Patent Office was inadvertent in making the grant. . Appellees for a time manufactured and sold the Johnson water column under license.

After paying something over $12,000 in royalties, they abrogated the contract. Their present manufacture is substantially the Johnson column, plus the Foster improvement, plus an improvement of'their own. We find the record sufficient to hold both appellees in this jurisdiction. From an extended examination of the file wrappers we find nothing that detracts from the face value of either patent as issued. Claim 11 of Johnson should not be included in the decree. Appellants, in response to interrogatories filed with appellees’ answer, stated that they would rely at the trial only upon claims 1, 21, and 38.

Without other notice, they included claim 11 in their evidence at the trial. The decree.is reversed, with direction to enter a decree for an injunction and an accounting.